IPBiz

Intellectual property news affecting business and everyday life

Thursday, December 31, 2015

The movies Concussion, Rollerball, and the myth of the solo inventor

With the movie "Concussion," derived from work by Dr. Bennet Omalu on football injuries, getting some
play in the year 2015, one thinks back 40 years to the 1975 movie Rollerball (which was set in the year 2018), wherein the character
MoonPie got the ultimate concussion. Although MoonPie is turned into a vegetable, the movie
protagonist Jonathan E. (James Caan) refuses to sign to terminate his life.

In 1975, Vincent Canby made a connection between Rollerball and football:

The only way science-fiction of this sort makes sense is as a comment on the society for which it's intended, and the only way "Rollerball" would have made sense is a satire of our national preoccupation with televised professional sports, particularly weekend football.

Although the film could be seen as a poster child for growing concern over violence in sports [see http://japenet.net/evolution_of_rollerball.html ], in particular football, it also illustrated the enjoyment of fans on seeing the violence.

Rollerball was based on a story by William Neal Harrison,a professor at the University of Arkansas and supposedly was inspired by Harrison seeing a fight break out on the court during a college basketball game.
As one piece of trivia, when Rollerball was filmed, the crowd scenes used the recorded sounds of fans at a Razorback basketball game.

But Rollberball is not simply about violence. As Wikipedia points out: Rollerball was conceived not merely to satisfy man's bloodlust, but to demonstrate the futility of individualism. Jonathan's singular talent and longevity in the sport defeats the intended purpose of Rollerball. In the movie, this message is conveyed by Energy Corporation chairman Mr. Bartholomew (John Houseman). In the world of patents, Mark Lemley, writing on the myth of the solo inventor, could be viewed as a Mr. Bartholomew.

In the scene in which Jonathan views the now-vegetable MoonPie, there was mention that Moonpie has no dreams. This is an allusion to an earlier line by Mr. Bartholomew:

Sweet Dreams, Moonpie. That's a bad habit you've got there. You know what that habit will make you dream, Moonpie? You'll dream you're an executive. You'll have your hands on all the controls, and you will wear a gray suit, and you will make decisions.

Patent interference coming in CRISPR war?

A post on GenomeWeb titled CRISPR Patent Fight Moves Ahead on the patent battle between Jennifer Doudna and Feng Zhang, noted that the USPTO issued an Initial Interference Memo, which recommends that the Patent Trial and Appeals Board conduct an interference proceeding between the two entities (Zhang's patent and Doudna's application), and further observed that the interference:

Of interference and settlement, one must recall the classic battle on the integrated circuit, with the basics discussed in the
January 2005 post on IPBiz: http://ipbiz.blogspot.com/2005/01/noyce-v-kilby.html. and see the discussion
in http://ipbiz.blogspot.com/2015/04/some-thoughts-on-upcoming-crispr-patent.html.

Note that Texas Instruments and Fairchild settled the case after the interference and before the CCPA decision.

Wednesday, December 30, 2015

A remedy for an author victim of plagiarism?

A method for compensating a plagiarized author-victim:

According to Spiro, the Free Press was made aware of the plagiarism and edited the article to note that it was details of the story was taken from iSportsWeb and include links to the site. The Free Press offered Harns [victim] compensation in the form of a free-lance rate as he had written for the publication in the past. It appears he refused, but asked the Free Press to donate it to a charity close to McCoy and the paper did that doubling the rate originally offered. In addition, Spiro reports that Sharp apologized to Harns and tried to offer compensation as well.

But this student was working within the accepted standards of neuroscience under the guidance of an expert in the discipline, and the source text was a research report published in a scientific journal. As I discuss in my viewpoint essay, certain types of text recycling are not only common in the sciences, they have been formally recognized as acceptable (and perhaps sometimes desirable) practice by the Committee on Publication Ethics. - See more at: http://blog.oup.com/2015/12/plagiarism-text-recycling/#sthash.3YjQVnZP.dpuf

If one is following an established procedure, there is no reason not to cite an earlier paper as the reference for the later procedure. If nothing else, this establishes that the procedure WAS followed. There have been some interesting cases wherein there was text about a standard procedure, which was not exactly followed, giving rise to different results, and then an argument about the standard procedure. Explicit citation cuts down on latititude for later weaseling.

Vehicle Intelligence "Alice'd" at CAFC

The district court determined, and the parties do not
dispute, that the claims at issue fall within the broad
categories identified in 35 U.S.C. § 101 (i.e., “any new and
useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof”).
The question on appeal is whether these claims fall into
the judicially created exception of patent-ineligible abstract
ideas. To answer this question, we apply the two step
test introduced in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296–98
(2012), and further explained in Alice Corp. Party v. CLS
Bank International, 134 S. Ct. 2347, 2355 (2014). First,
we “determine whether the claims at issue are directed to
a patent-ineligible concept.” Alice, 134 S. Ct. at 2355.
Second, we “examine the elements of the claim to determine
whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patenteligible
application.” Id. at 2357. This step requires
examining the elements of each claim both individually
and as an ordered combination. Id. at 2355. As the
Supreme Court has explained, “transformation into a
patent-eligible application requires more than simply
stating the abstract idea while adding the words ‘apply
it.’” Id. (quoting Mayo, 132 S. Ct. at 1294) (internal
quotation marks and alterations omitted).

The claims fail to be in a patentable category:

The claims at issue are drawn to a
patent-ineligible concept, specifically the abstract idea of
testing operators of any kind of moving equipment for any
kind of physical or mental impairment. None of the
claims at issue are limited to a particular kind of impairment,
explain how to perform either screening or testing
for any impairment, specify how to program the “expert
system” to perform any screening or testing, or explain
the nature of control to be exercised on the vehicle in
response to the test results.

Of the machine or transformation test:

Vehicle Intelligence’s argument harkens back to our pre-
Alice machine-or-transformation test in arguing that the
claimed methods are tied to particular machines and that
alone is sufficient to confer eligibility. But, post-
Mayo/Alice, this is no longer sufficient to render a claim
patent-eligible. DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014). Merely stating that
the methods at issue are performed on already existing
vehicle equipment, without more, does not save the disputed
claims from abstraction.

3M sues XPEL over XPEL’s XPF paint protection film is a multilayer film

The Minneapolis Star-Tribune noted XPEL's comments:

“The company was not given any prior notice of the allegations making the basis of the complaint and is currently evaluating the merit, if any, of such complaint. The company currently intends to vigorously defend itself against such patent infringement claims.”

Getting credit in CRISPR: These days the major discoveries lie waiting in the details, meaning that any one lab is unlikely to shed all the necessary light on a complex phenomenon

Editas Medicine, a leading genome editing company, today announced that they have entered into an exclusive joint license agreement with the Broad Institute of MIT and Harvard and Harvard University to access intellectual property and technology related to the CRISPR/Cas9 and TALE genome editing systems. The license allows broad utilization of the technology developed by Editas founders, Feng Zhang, Ph.D., of the Broad Institute, and George Church, Ph.D., and David R. Liu, Ph.D., both of Harvard University, for the prevention and treatment of human disease.

Fast forward to December 2015, and The Scientist has a post Credit for CRISPR: A Conversation with George Church with text:

Why that happened isn’t readily apparent, said Doudna. “Looking at peer-reviewed publications, George Church published a paper at the same time in the same issue of Science magazine as Feng Zhang on using CRISPR technology in human cells,” she told The Scientist. “It’s very clear what’s in the scientific record.”

That CRISPR/Cas9 gene-editing was a larger collaborative effort that extends beyond Doudna, Charpentier, and Zhang is an issue that others have spoken and written about. An economic manifestation of the debate, in the form of a patent dispute, has even sprung up within the oft-cited CRISPR trinity. Then there are the prizes. In 2014, Doudna and Charpentier were awarded a $3 million Breakthrough Prize. And last year Thomson Reuters predicted a Nobel Prize in Chemistry for the duo. (The 2015 honors went to a trio of DNA repair researchers instead.)

Meanwhile, the media continues to perpetuate the condensed CRISPR origin story when mentioning the technology’s evolution in the space of a sentence or two. Part of that oversimplification is rooted in the fact that most modern life-science researchers aren’t working to uncover broad biological truths. These days the major discoveries lie waiting in the details, meaning that any one lab is unlikely to shed all the necessary light on a complex phenomenon—much less on how to adopt that phenomenon for human purposes—in isolation. That reality does little to allay what is probably a fundamental human urge to pin a few names and faces on major breakthroughs.

But how do we fix a problem of public perception that stems from the very nature of scientific discovery in the modern age? Doudna had a suggestion. “I think it’s great that journalists look into this and explain the process of science,” she said. “Things don’t happen overnight; they happen through a process of investigation. And very typically there are multiple laboratories that are working in an area, and it’s almost universally true.”

The Scientist briefly alludes to the patent dispute, but does not mention the EDITAS fall-out.

Blawgsearch discussion of IPBiz

CAFC reverses ED Texas in Commil v. Cisco

From the decision:

This case returns to us on remand from the Supreme
Court. See Commil USA, LLC v. Cisco Sys., Inc., 135 S.
Ct. 1920 (2015). While our previous opinion had remanded
this case to the district court for a new trial, Commil
USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1372 (Fed.
Cir. 2013), when we received the case back from the
Supreme Court we granted Cisco’s request to retain the
case and address Cisco’s remaining non-infringement
arguments which we had declined to address in our
previous opinion. ECF No. 101. We now conclude that
substantial evidence does not support the jury’s finding
that Cisco’s devices, when used, perform the “running”
step of the asserted claims. The district court’s judgment
is therefore reversed.1

(...)

Because we find none of Commil’s other arguments
persuasive, we conclude that substantial evidence does
not support the jury’s necessary finding that Cisco’s
devices, when used, perform the “running” step of the
claims. Because this conclusion precludes liability under
either of Commil’s direct or inducement theories, we
reverse the judgment of the district court.

A bit of history:

The jury concluded that Commil’s patent was
valid, that Cisco was liable for direct but not induced
infringement, and awarded $3.7 million in damages.
Commil then filed a motion for a new trial on induced
infringement and damages, which the district court
granted. The second jury concluded that Cisco was liable
for induced infringement and awarded $63.7 million in
damages.

Cisco thereafter appealed to us, raising a number of
issues. A split panel affirmed in part, vacated in part,
and remanded for a new trial. Commil, 720 F.3d at 1361.
Because we were remanding for a new trial, we did not
reach certain of Cisco’s arguments on non-infringement
and damages. Id. at 1372. Following that decision,
Commil sought certiorari on the limited question of
whether a defendant’s belief that a patent is invalid is a
defense to induced infringement. The Supreme Court
granted certiorari, reversed the majority’s decision on
that issue, and vacated and remanded back to us.
Upon return to this court, Cisco requested that we
address its non-infringement arguments that a majority
of this panel previously had declined to decide. Specifically,
Cisco contends that Commil cannot prevail on its
infringement charges because neither Cisco nor its customers
directly infringe by performing both method steps.

Ellen Newlin Chase and Margaret Chase Perry have filed a lawsuit against CBS, Warner Bros. and other production and media companies over the use of lyrics written by their mother, the poet Edith Newlin, the New York Times reports. In 1937, her poem published in a book called Songs for the Nursery School included all the words from Sheldon’s lullaby, with only “soft/warm” and “happy/sleepy” switched in position.

TIME discusses the theory of infringement, which presumably would be under the 1909 Copyright Act:

The sisters say that the publisher of the book, Willis Music (a defendant in the suit) registered the collection with the Copyright Office in 1937, and renewed the copyright in 1964. Under applicable laws, the suit claims that this “served also to register and renew Edith Newlin’s copyright in the Soft Kitty Lyrics.” When Newlin died in 2004, her daughters say they became the sole owners of that copyright. However, when producers of the show sought to use the song, they allegedly negotiated only with Willis Music, not with the sisters. Now, the sisters are seeking damages from one of the most-watched sitcoms of the last decade.

One notes the 1909 Copyright Act was repealed and superseded by the Copyright Act of 1976, but it remains effective for copyrighted works created before the Copyright Act of 1976 went into effect in January 1, 1978. It allowed for works to be copyrighted for a period of 28 years from the date of publication. The copyrighted work could be renewed once for a second term of equal value.

As general guidelines:

Federal standards for copyright duration differ substantially
under the 1909 act compared with the 1976 act because
of the renewal term contained in the 1909 act. Under the
1909 act, federal copyright was secured on the date a work
was published or, for unpublished works, on the date of
registration. A copyright lasted for a first term of 28 years
from the date it was secured. The copyright was eligible
for renewal during the final, that is, 28th year, of the first
term. If renewed, the copyright was extended for a second,
or renewal, term of 28 years. If it was not renewed, the
copyright expired at the end of the first 28-year term, and
the work is no longer protected by copyright. The term of
copyright for works published with a year date in the notice
that is earlier than the actual date of publication is computed
from the year date in the copyright notice.

The copyright discussed in the above, renewed in 1964, would have expired
28 years later in 1992, and the covered work would have entered the
public domain in 1992.

Also, the 1909 law mentions that the word "author" shall include an employer for works made
for hire.

Recall the issues with "derivative work" in the matter of
"It's a Wonderful Life."

**The coverage by the New York Times included the text

At times, the credits said the song was written by Bill Prady, a principal of Chuck Lorre Productions, one of the show’s producers, according to the lawsuit.

As wikipedia notes of the Supreme Court Dastar case: The Court reasoned that although the Lanham Act forbids a reverse passing off, this rule regarding the misuse of trademarks is trumped by the fact that once a copyrighted work (or, for that matter, a patented invention) passes into the public domain, anyone in the public may do anything they want with the work, with or without attribution to the author.

Sunday, December 27, 2015

Deja vu all over again in the "patent grant rate" saga?

This new blog post titled “Another depressing year for patent law?” says a lot about how practitioners in the US view the USPTO. Watch how this US patent lawyer, Lawrence B. Ebert, quoting Larry Downes as saying: “On just one day in November, for example, over 200 new patent lawsuits were filed, as plaintiffs rushed to beat a change in federal procedure that could require more specific claims. Most were from companies that buy up patents of dubious quality and use them to extract nuisance settlements from actual innovators.”

Is this what Europe is hoping to achieve? We wrote thousands of articles about the USPTO and we have great (and growing) fear that those same disasters (and patent predators) will reach Europe. Some already do

Aside from the observation that the text beginning "Watch how..." is not a complete sentence, one notes that the filings on November 30 were in anticipation of different pleading requirements after Form 18 was removed from the appendix of the Federal Rules. Going forward, pleading complaints in US patent cases needs to more specific.
Of humor, even an episode of "The Good Wife" [KSR] referenced this matter. [As one bit of trivia, Larry Downes and LBE are both University of Chicago Law, '93]

**Other text in the article was of interest:

The last point suggests to us that the Team Battistelli-led EPO is gradually emulating the notorious USPTO (very deeply involved in and dominated by large corporations, with terrible grant rates).

The "terrible grant rates" link is --http://www.vox.com/2014/5/5/5682926/getting-patents-is-preposterously-easy-under-obama -- which in turn leads one to
-- http://arstechnica.com/tech-policy/2013/04/study-suggests-patent-office-lowered-standards-to-cope-with-backlog/ --, an article by Timothy B. Lee on Apr 7, 2013 6:45pm EDT, which begins:

When David Kappos announced his resignation as head of the United States Patent and Trademark Office (USPTO) late last year, one of his most touted accomplishments was a significant reduction in the backlog of pending patent applications. Kappos' fans have attributed this to the hiring of hundreds of additional patent examiners.

But a new study suggests another explanation for the declining backlog: the patent office may have lowered its standards, approving many patents that would have been (and in some cases, had been) rejected under the administration of George W. Bush. The authors—Chris Cotropia and Cecil Quillen of the University of Richmond and independent researcher Ogden Webster—used Freedom of Information Act requests to obtain detailed data about the fate of patent applications considered by the USPTO since 1996.

They found that the "allowance rate," the fraction of applications approved by the patent office, declined steadily from 2001 and 2009. But in the last four years there's been a sharp reversal, with a 2012 allowance rate about 20 percent higher than it was in 2009.

The link for this article on the Cotropia website is to an article by Cotropia:
Patent Applications and the Performance of the U.S.
Patent and Trademark Office
Christopher A. Cotropia
University of Richmond, ccotropi@richmond.edu, with the recommended citation:

The 2013 article makes no reference whatsoever to published criticisms of the Quillen/Webster methodology.

IPBiz referred to the third Quillen/Webster paper [ Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office--One More Time, 18 FED. CIR. B.J. 379 (2009). ] in a 2014 post Patent "Quality", again and included a reference to a paper showing the errors of the Quillen/Webster approach:

we suggest that Quillen and Webster's elevated grant rates arise from a flawed numerical approach.

**Separately, Lemley and Sampat wrote in the "rubber stamp" paper: We find that the PTO rejects a surprisingly high percentage of patents. While more than
two-thirds of all applications result in at least one patent, a significant number of applications are
rejected and then finally abandoned by the applicant.

which includes a footnote:
We thank Lawrence Ebert for raising this concern. Lawrence Ebert, More on Patent Grant Rate; the USPTO Is NOT a Rubber
Stamp, IPBIZ, Aug. 2, 2007, http://ipbiz.blogspot.com/2007/08/more-on-patent-grant-rate-uspto-is-not.html.

CBS Sunday Morning on December 27, 2015

Charles Osgood introduced the stories for Sunday, December 27.

Mark Strassman reports cover story on weather.
Jane Pauley on Gil Battle. ostrich egg art.
Mo Rocca on Dame Maggie Smith. Downton Abbey.
Hail and Farewell.
Headlines. Subject is weather. Tornados in Dallas area. Historic blizzard coming. Wildfire in coastal southern California. Leader of ISIS speaks.
Factoid: $70 billion of purchases are returned.
Pictures of aftermath of Dallas tornados. Mark Strassman begins his cover story with picture of Buffalo last year with snow. Then 70s in NYC on Christmas. More than a thousand weather records broken in December 2015. Erich Fischer for CBS Boston. Feb 2015 was coldest month; Dec. 2015 the warmest. Mantua studying El Nino. The current El Nino is one of the three strongest. Director of National Weather Service. Killer tornados. In California, warming oceans. Fish go further off shore; feeding issues for seals.

Jane Pauley on ostrich egg art by former inmate. Gil Battle in California prisons. Carves with dentist drill. 1/16 of an inch. Abscond. After prison, moved to Phillipines. An artist who tells prison stories. The eggs sell for $14K each. Art saves lives.

David Turracoma on bloody Mary. Bar shipped from NY to Paris. The name comes from Harry MacElhone, a barman from Dundee, Scotland, hired to run the Paris bar. In 1920s, Harry's made first bloody Mary. Fernan Petrio. Vodka alone too bland. Bloody Maria, with tequila.

Steve Hartman on Pittsburgh policeman Jack Mook. Steel City Boxing. Story aired in 2014. Women wrote in to meet Jack. This story is on Jack getting married.

Saturday, December 26, 2015

The USPTO on December 26, 2015

Visiting uspto.gov on December 26 gives the message:

A major power outage at USPTO headquarters occurred Tuesday, December 22, resulting in damaged equipment that required the subsequent shutdown of many of our online and IT systems. This includes our filing, searching, and payment systems, as well as the systems our examiners across the country use. We are working diligently to assess the operational impact on all our systems and to determine how soon they can be safely brought back into service. Status updates and alternative filing methods can be found on our systems alert page (www.uspto.gov/blog/ebiz/) as they become available, as well as on our Facebook (www.facebook.com/uspto.gov) and Twitter (www.twitter.com/uspto) accounts.

The contents of blog/ebiz:

USPTO Systems Status and Availability

Check this page for the latest information on operating status and availability of Online Business Systems. For Standard Hours of Availability for Online Business Systems, System Descriptions, and Operating Requirements/Compatibilities, see the links at left.

Current Status

Wednesday Dec 23, 2015

USPTO Power Outage Update

Statement updated at 6:30pm ET December 24, 2015 to include link to a more detailed statement from Acting Chief Communications Officer Patrick Ross regarding the outage.

A major power outage at USPTO headquarters occurred Tuesday, December 22, resulting in damaged equipment that required the subsequent shutdown of many of our online and IT systems. This includes our filing, searching and payment systems used by examiners across the country. However, we are now able to receive faxed documents. We are working diligently to assess the operational impact on all our systems and to determine how soon they can be safely brought back into service in the coming days. We understand how critical these systems are for our customers, and our teams will continue to work around the clock to restore them as quickly as possible. We are currently estimating that these systems will be impacted at least through Monday morning, December 28.

Statement by USPTO Acting Chief Communications Officer Patrick Ross

In light of this emergency situation, the USPTO will consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015 to be a “Federal holiday within the District of Columbia” in accordance with the description and regulations in this official notice posted here: http://www.uspto.gov/blog/ebiz/.

Further status updates will be issued on this page as they become available, as well as on our Facebook (www.facebook.com/uspto.gov) and Twitter (www.twitter.com/uspto) accounts.

Thank you for your patience as we work to restore full service as soon as possible.

Shutdown of Certain Electronic Systems of the United States Patent and Trademark Office from Tuesday, December 22, 2015 through Thursday, December 24, 2015

On December 22, 2015, at approximately 7:00 pm, the United States Patent and Trademark Office (USPTO) experienced a major power outage at its headquarters in Alexandria, Virginia, resulting in damaged equipment that required the subsequent shutdown of many USPTO online and information technology systems. The USPTO is currently estimating that these systems will be impacted through at least the Federal holiday on Friday, December 25, 2015. In light of this emergency situation, the USPTO will consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015, to be a “Federal holiday within the District of Columbia” under 35 U.S.C. § 21 and 37 C.F.R. §§ 1.6, 1.7, 1.9, 2.2(d), 2.195, and 2.196. Any action or fee due on these days will be considered as timely for the purposes of, e.g., 15 U.S.C. §§ 1051(b), 1058, 1059, 1062(b), 1063, 1064, and 1126(d), or 35 U.S.C. §§ 119, 120, 133, and 151, if the action is taken, or the fee paid, on the next succeeding business day on which the USPTO is open (37 C.F.R. §§ 1.7(a) and 2.196). A subsequent notice is anticipated to be issued as needed if the USPTO’s systems are not fully operational by Monday, December 28, 2015.

37 C.F.R. §§ 1.6(a)(2), 2.195(a)(4), and 2.198 provide that certain correspondence deposited in the Priority Mail Express® service of the United States Postal Service (USPS) in accordance with 37 C.F.R. §§ 1.10 or 2.198 will be considered filed on the date of deposit (as shown by the “date accepted” on the mailing label) with the USPS. Thus, any paper or fee properly deposited in the Priority Mail Express® service of the USPS on Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24, 2015, in accordance with 37 C.F.R. §§ 1.10 or 2.198, will be considered filed on its respective date of deposit in the Priority Mail Express® service of the USPS (as shown by a “date accepted” on the mailing label).

37 C.F.R. §§ 1.6(a)(4) and 2.195(a)(2) provide that patent- and trademark-related correspondence transmitted electronically to the USPTO will be considered filed in the USPTO on the date the USPTO received the electronic transmission. Thus, any patent- or trademark-related correspondence transmitted electronically to the USPTO on Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24, 2015, will be considered filed in the USPTO on the date the USPTO received the electronic transmission. Patent correspondence successfully received by the USPTO through the Electronic Filing System (EFS-Web) and filed in compliance with the EFS-Web Legal Framework will receive the date indicated on the Acknowledgement Receipt. See the Manual of Patent Examining Procedure (MPEP) § 502.05 and the USPTO website at www.uspto.gov/patents/process/file/efs/guidance/New_legal_framework.jsp. Trademark filings properly filed through TEAS, TEASi, and ESTTA will receive the date indicated in the e-mail confirmation sent at the time of a successful filing.

Public and Private PAIR

Public and Private Patent Application Information Retrieval (PAIR) are also impacted.

If you have any questions, please contact the Patents Electronic Business Center (PEBC) by telephone at 1-866-217-9197 or by email at ebc@uspto.gov. PEBC hours of operation Monday through Friday, from 6 a.m. to midnight.

Posted at 07:20PM Dec 23, 2015 in Current Status |

In passing, note that MPEP 510 relates to CLOSINGS of the USPTO:

I.FILING OF PAPERS DURING UNSCHEDULED CLOSINGS OF THE U.S. PATENT AND TRADEMARK OFFICE

37 CFR 1.9(h) provides that the definition of “Federal holiday within the District of Columbia” includes an official closing of the Office. When the entire USPTO is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a “Federal holiday within the District of Columbia” under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open. In addition, 37 CFR 1.6(a)(1) provides “[t]he Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia” to clarify that any day that is a Saturday, Sunday or Federal holiday within the District of Columbia is a day that the USPTO is not open for the filing of applications within the meaning of Article 4(C)(3) of the Paris Convention. Note further that in accordance with 37 CFR 1.6(a)(2), even when the Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or federal holiday within the District of Columbia, correspondence deposited as Priority Mail Express® with the United States Postal Service in accordance with 37 CFR 1.10 will be considered filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or federal holiday within the District of Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7).

Also, there is a well-known Supreme Court case in mining law about relying on statements of federal officials about deadlines.

From Justice O'Connor, concurring in 471 US 84:

The Government has not disputed that appellees sought in good faith to comply with the statutory deadline. Appellees contend that in order to meet the requirements of § 314, they contacted the BLM and were informed by agency personnel that they could file the required materials on December 31, 1980. Appellees apparently relied on this advice and hand-delivered the appropriate documents to the local BLM office on that date. The BLM accepted the documents for filing, but some three months later sent appellees a notice stating that their mining claims were "abandoned and void" because the filing was made on, rather than prior to, December 31, 1980. Although BLM regulations clarify the filing deadlines contained in § 314, the existence of those regulations does not imply that appellees were unjustified in their confusion concerning the deadlines or in their reliance on the advice provided by BLM's local office. The BLM itself in 1978 issued an explanatory pamphlet stating that the annual filings were to be made "on or before December 31" of each year. Ante, at 89-90, n. 7. Moreover, the BLM evidently has come to understand the need to clarify the nature of the annual filing requirement, because it now sends reminder notices every year to holders of recorded mining claims warning them that the deadline is approaching and that filings must be made on or before December 30.

The unusual facts alleged by appellees suggest that the BLM's actions might estop the Government from relying on § 314(c) to obliterate a property interest that has provided a family's livelihood for decades. The Court properly notes that the estoppel issue was not addressed by the District Court and will be open on remand. Ante, at 89-90, n. 7. In this regard, I merely note that in my view our previous decisions do not preclude application of estoppel in this context. In Heckler v. Community Health Services of Crawford County, Inc., 467 U.S. 51, 104 S.Ct. 2218, 81 L.Ed.2d 42 (1984), we expressly declined to adopt "a flat rule that estoppel may not in any circumstances run against the Government." Id., at 60, 104 S.Ct., at 2224. Such a rule was unnecessary to the decision in that case, and we noted our reluctance to hold that "there are no cases in which the public interest in ensuring that the Government can enforce the law free from estoppel might be outweighed by the countervailing interest of citizens in some minimum standard of decency, honor, and reliability in their dealings with their Government." Id., at 60-61, 104 S.Ct., at 2224 (footnote omitted).

The Massachusetts Supreme Court found "no conflict of interest" under Rule 1.7 of the Massachusetts Rules of Professional Conduct pertaining to conflicts of interests between current clients. The two representations [by Finnegan of Maling and of a competitor in the field of screwless eyeglass hinges ] were not “directly adverse” under the rule because direct adverseness does not arise merely from a conflict of economic interests, but requires “a conflict as to the legal rights and duties of the clients.” As to the legal rights, The Court observed that Maling and his competitor, “were not competing for the same patent, but rather different patents for similar devices.”

link to article in the National Law Review: http://www.natlawreview.com/article/massachusetts-court-clears-patent-prosecutors-malpractice-claims-arising.

One thinks back to the conflict case related to COX-2 inhibitors involving Pennie & Edmonds, Searle, and the University of Rochester.

At least you guys noticed. The absence of this story from PatentlyO (at least as of the time of this writing) confirms that author's total lack of involvement with actual patent prosecution. I think academia is like the Dark Side.

Don't know how to explain IPWatchdog's silence.

Posted by: Heebie-Jeebies | December 24, 2015 at 12:17 AM

Wow. This Googler-led patent office doesn't understand the concept of redundancy and separating your systems - even the "EFS-Web contingency" system is down, which means it was housed at the same location and running on the same power source as EFS, PAIR, etc.

Wow.

I hope the woman from Google knows about the concept of back-ups. I'd hate to find, come Monday morning, that various file histories that were kept only in electronic format have disappeared. The PTO couldn't be *that* bad, right? Or could it?

Posted by: Disbelievin' Doug | December 24, 2015 at 04:33 AM

What an absolute shit show. The Patent Office ultimately did the right thing, but they should have done it sooner.

Posted by: Some Random Guy | December 24, 2015 at 06:30 AM

Completely agree with the comment about the USPTO's apparent failure to provide any sort of "emergency" redundancy. It’s startling that the USPTO apparently had no real “backup system” to handle such an emergency for electronic systems that are so vital to their operations, as well as those customers who use it. I can’t imagine any major corporation ever leaving such important electronic systems so vulnerable to such a “meltdown,” knowing full well the serious consequences of doing so.

Such a "meltdown" also couldn't have happened at a worse time of year. There are many, many corporations that will be asking their patent attorneys to file many, many new applications between now and the end of the year. In addition, the USPTO, if it has the authority, would be wise to announce that they're waiving the fee normally charged for non-electronic filing of new applications-the failure to file electronically is almost certainly not the fault of the applicants. If the USPTO can't get their electronic systems up and running by Monday (December), I can just hear the “firestorm” building as all those folks trying to make last minute (and many) filings are told they have to use the old Express Mail procedure as the only Plan B.

Posted by: EG | December 24, 2015 at 07:37 AM

Although the reference to Google is to Michelle Lee, one assumes the absence of back-up existed during the tenure of Kappos, the man from IBM. Two Obama appointees failed to foresee this potential issue.

Declaring the 22nd through 24th to be Federal holidays isn't just a nicety: it means payments due on those days will be accepted on the next business day, while correspondence sent to the organisation “will be considered filed in the USPTO on the date the USPTO received the electronic transmission.”

The organisation says it is working hard and fast to sort things out before Christmas and will post more news of its capabilities on December 28th.

A little light Googling suggests the USPTO is a user of Juniper (PDF) and EMC and Cisco products.

Here's hoping the USPTO's tech team can get this sorted before the real holidays arrive: data centres aren't much of a place to spend the festive season

A post at FCW included the text:

"We are working diligently to assess the operational impact on all our systems and to determine how soon they can be safely brought back into service in the coming days," the agency pledged. "We understand how critical these systems are for our customers, and our teams will continue to work around the clock to restore them as quickly as possible, though the impacts may be felt through the Christmas holiday."

USPTO's blog post directs applicants who are up against deadlines to use alternative filing methods, including snail mail -- which comes with a $400 non-electronic filing fee.

USPTO web apps are meant to be available 24/7.

When asked whether USPTO staff would be working on Christmas Eve or Christmas to get the systems back online, an agency spokesman declined to say, merely pointing back to the official statement.

Wednesday, December 23, 2015

Plagiarism discussion at Columbia College

The average America adult spends 11 hours a day on electronic media, according to a 2014 report by Nielsen, an international media information measurement organization headquartered in New York City.

While students devote their time to reading and writing online, many educators learned to consume and produce information using primarily a print interface, a process that automatically creates separation between the writer’s and the source’s words and ideas.

“I don’t think students realize that where their words come in and where somebody else’s words come in get merged for a reader, unless there’s some kind of signaling,” said Hornbuckle.

Eleven hours a day?

Footnoting as signalling?

At Columbia College:

As a part of the first-year writing program, all students in ENG 101 and 102 courses, along with some upper-level English and writing classes, are required to sign a statement of academic integrity at the start of the semester. It indicates they will be taught certain aspects of integrating sources, techniques to avoid plagiarism within those courses and ways to find information to help them. This is so they know what to expect and what their responsibilities are once taught properly, according to Hornbuckle. -

And note:

“I think there’s as much value in being able to skillfully integrate other peoples’ ideas into an overview of something as it is to come up with your own brilliant idea. I think, in fact, you come up with those brilliant ideas because you have integrated the thoughts of others,” Nail said. -

University of South Florida sues Jackson Laboratory of Bar Harbor, Maine over US patent 5,898,094

In suing Jackson Laboratory over claims of US Patent 5,898,094, the University of South Florida gives us an example of a university suing an entity that actually makes product.

Bizjournals notes of the dispute:

USF states that it owns the entire right, title and interest to the 094 Invention and was issued a patent on April 27, 1999 by the U.S. Patent and Trademark Office. In the patent, USF notes that so-called "transgenic animals" such as the mice at the center of this legal dispute are being used to "study neurodegenerative disorders, both to understand the underlying disease pathology as well as to test treatment protocols."

A transgenic mouse with enhanced Alzheimer's Disease related amyloid accumulation in its brain produced by:
producing an F1 generation mouse by crossing a first transgenic mouse whose genome comprises at least one transgene comprising a DNA sequence encoding mutant presenilin M146L operably linked to a promoter with a second transgenic mouse whose genome comprises at least one transgene comprising a DNA sequence encoding APP K670N,M671L operably linked to a promoter, wherein the first transgenic mouse expresses the DNA sequence encoding the mutant presenilin and wherein the second transgenic mouse expresses the DNA sequence encoding the APP; and
selecting from the offspring of the cross, those transgenic mice whose genome comprises at least one DNA sequence encoding mutant presenilin M146L operably linked to a promoter and at least one transgene comprising a DNA sequence encoding APP K670N,M671L operably linked to a promoter, and identifying an F1 mouse which express both transgenes such that the F1 mouse develops accelerated deposition of Aβ in its brain as compared to non-transgenic mice or either parental mouse.

The CAFC determines part of the Lanham Act is unconstitutional in IN RE SIMON SHIAO TAM

In 1997, in a talk at SSI-11, LBE mentioned the Lanham Act case involving the American Physical Society (APS), which turned on a distinction of protected free speech and commercial speech:

A recent case of interest to scientists involved the allegation that use of citation impact
data (by the physics societies AIP and APS) could, in part, sustain a charge of false advertising.
In a preliminary decision (Gordon and Breach v American Institute of Physics, 37 USPQ2d 1289
(SD NY 1995)), a federal district court distinguished citation data published in a journal
(protected free speech) from the same data specifically addressed to librarians (commercial
speech). A decision on the merits of the latter supported the position of the societies (see
Science, 277, 1611, Sept. 12, 1997; Physics Today, pp. 93-94 (Oct. 1997); Intellectual Property
Today, p. 5 (Oct. 97) and pp. 28-29 (Nov. 97) [The text of the November article is available at
http://www.lawworks-iptoday.com/11-97/ebert.htm.]. On a lighter note, the publisher of a book
on the Kennedy assassination ("Case Closed") was found not to violate the false advertising
provision of the Lanham Act for an advertisement featuring pictures of conspiracy theorists with
the caption "GUILTY OF MISLEADING THE AMERICAN PUBLIC" (Groden v Random
House, 35 UPSQ2d 1547 (2d Cir 1995)).

There was also a reference to the Wilcher case: However,
scandalous or obscene material cannot be registered. (In re Wilcher, 40 USPQ2d 1930 (TTAB
1996)).

Link: http://www4.eng.hawaii.edu/~ssi11/SSI-11Papers/P3.pdf

** On December 22, 2015, the CAFC decided IN RE SIMON SHIAO TAM, and determined that part of
the Lanham Act was unconstitutional:

The government cannot refuse to register disparaging
marks because it disapproves of the expressive messages
conveyed by the marks. It cannot refuse to register marks
because it concludes that such marks will be disparaging
to others. The government regulation at issue amounts to
viewpoint discrimination, and under the strict scrutiny
review appropriate for government regulation of message
or viewpoint, we conclude that the disparagement proscription
of § 2(a) is unconstitutional.

Fragments from the various parts of the decision/dissents are included:

--
The fact that the Lanham Act derives from the Commerce Clause, not the Spending Clause, is further evidence that trademark registration is not a subsidy. The purpose of the Lanham Act is to regulate marks used in interstate commerce, prevent customer confusion, and protect the goodwill of markholders, 15 U.S.C. § 1127, not to subsidize markholders. Moreover, the government funding cases have thus far been limited to situations where the government has chosen to limit funding to individuals that are advancing the goals underlying the program the government seeks to fund. See generally Agency for Int’l Dev., 133 S. Ct. at 2324–25; Rust, 500 U.S. at 191; cf. American Library Ass’n, 539 U.S. at 211 (it is not unconstitutional for the government to insist that “public funds be spent for the purposes for which they were authorized”). The restriction on the registration of disparaging marks bears no relation to the objectives, goals, or purpose of the federal trademark registration program.

--
The government also argues that it has a legitimate interest in “declining to expend its resources to facilitate the use of racial slurs as source identifiers in interstate commerce.” Appellee’s En Banc Br. 43. The government’s interest in directing its resources does not warrant regulation of these marks. As discussed, trademark registration is user-funded, not taxpayer-funded. The government expends few resources registering these marks. See supra at 53–55. Its costs are the same costs that would be incidental to any governmental registration: articles of incorporation, copyrights, patents, property deeds, etc.

--Reyna dissent

The Majority holds today that Mr. Tam’s speech, which disparages those of Asian descent, is valuable political speech that the government may not regulate except to ban its use in commerce by everyone but Mr. Tam. I believe the refusal to register disparaging marks under § 2(a) of the Lanham Act is an appropriate regulation that directly advances the government’s substantial interest in the orderly flow of commerce. Because I would uphold the constitutionality of § 2(a), I respectfully dissent

--
Because “the Constitution accords less protection to commercial speech than to other constitutionally safeguarded forms of expression,” Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 64-65 (1983), the government may regulate the use of trademarks to ensure the orderly flow of commerce. For example, the government may disallow trade names that create “[t]he possibilities for deception,” even if the names are not untruthful. Friedman, 440 U.S. at 13. The government may similarly implement a trademark registration program, as it did through the Lanham Act, which provides certain speakers exclusive rights to their chosen marks in commerce. Such regulation is permissible under the First Amendment only because the speech being regulated is commercial and because the government has a substantial interest in facilitating commerce by “insuring that the stream of commercial information flows cleanly as well as freely.” Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council, Inc., 425 U.S. 748, 771-72 (1976).

--

The Lanham Act declares unequivocally that “[t]he intent of this chapter is to regulate commerce.” 15 U.S.C.A. § 1127.
--
The marketplace of ideas differs dramatically from the marketplace of goods and services. While the marketplace of ideas may tolerate or even benefit from the volatility that accompanies disparaging and insulting speech, the marketplace of goods and services is a wholly different animal. Commerce does not benefit from political volatility, nor from insults, discrimination, or bigotry. Commerce is a communal institution regulated for the mutual economic benefit of all. Commercial speech that discredits or brings reproach upon groups of Americans, particularly based on their race, has a discriminatory impact that undermines commercial activity and the stability of the marketplace in much the same manner as discriminatory conduct.

--

Nearly every disparaging mark identified in the voluminous briefing and opinions in this case has involved disparagement of race, gender, ethnicity, national origin, religion, sexual orientation, and similar demographic classification. The impact of advancing these bigoted messages through the ubiquitous channels of commerce may be discriminatory, and even if not discriminatory, at least disruptive to commerce. The only question is whether the government’s interest in avoiding this commercial disruption outweighs the modest “burden” that its refusal to register the offending marks places on the freedom of speech. I believe it does.

--
but only denies him a government-created benefit—the exclusive right to use that speech in commerce in connection with the sale of particular goods or services. At bottom, the only burden the application of § 2(a) imposes in this case is that Mr. Tam is free to communicate his chosen message within or without commerce, so long as he is willing to permit others to do the same.

--

Additionally, any minimal value disparaging speech might offer in the marketplace of ideas is far diminished in the marketplace of goods and services, which is the only context at issue in this appeal. One can hardly imagine what legitimate interest a vendor of goods or services may have in insulting potential customers. Whatever value disparaging speech might possess when used in private life, it loses when used in commerce.
--

When we balance the government’s substantial interest in the orderly flow of commerce against the modest imposition of § 2(a) on a narrowly tailored portion of particularly low-value speech, the standards of intermediate scrutiny are satisfied. Whatever modest imposition the statute makes on the free flow of public discourse, it is nothing more than an “incidental restriction on First Amendment freedom [that] is no greater than is essential to the furtherance of the governmental interest” in the orderly flow of commerce. See Barnes, 501 U.S. at 561. For the foregoing reasons, I believe that § 2(a) is constitutional. I respectfully dissent.

Monday, December 21, 2015

The Hoverboard patent wars

EDGE SYSTEMS LLC v. AGUILA: pro se appellant loses at CAFC

A party seeking a preliminary injunction must estab-
lish (1) “he is likely to succeed on the merits”; (2) “he is
likely to suffer irreparable harm in the absence of prelim-
inary relief”; (3) “the balance of equities tips in his favor”;
and (4) “an injunction is in the public interest.”
Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008) (cita-
tions omitted).
We refer to these considerations as the Winter
Factors and examine them in turn.
Under the first Winter Factor, a patentee “must
demonstrate that it will likely prove infringement of one
or more claims of the patents in-suit, and that at least one
of those same allegedly infringed claims will also likely
withstand the validity challenges presented by the accused infringer.”
AstraZeneca LP v. Apotex, Inc., 633 F.3d
1042, 1050 (Fed. Cir. 2010) (internal
quotation marks and citation omitted). A court’s patent infringement analysis
involves two steps: (1) “the court determines the scope
and meaning of the asserted claims”; and (2) “the properly
construed claims are compared to the allegedly infringing
device.”
Mas-Hamilton Grp. v. LaGard, Inc., 156 F.3d
1206, 1211 (Fed. Cir. 1998) (internal citati
ons omitted).
However, the preliminary injunction “should not issue if
an alleged infringer raises a substantial question regard-
ing either infringement or validity, i.e., the alleged in-
fringer asserts an infringement or invalidity defense that
the patentee has not shown lacks substantial merit.”
AstraZeneca LP, 633 F.3d at 1050
(citation omitted).

Osgood on Steinway. 1853. 600,000th piano. NYC factory since 1871. 1880 factory in Hamburg. New Steinway showroom to open this winter. Osgood doing I'll be home for Christmas.
Chef Bobby Flay. Failures with cooking a goose.
Next week "hail and farewell"

Moment of nature. Hocking Hills State Park in south central Ohio.
Link: http://www.thehockinghills.org/

Friday, December 18, 2015

Post in TIME attacks Wright Brothers as pioneering trolls

There is a sad post at TIME magazine ripping the Wright Brothers as the pioneering patent trolls.

Link: http://time.com/4143574/wright-brothers-patent-trolling/

There are at least two things wrong with the article.

NOT TROLLS. The Wrights were not trolls (or NPEs) by today's definitions.
They invented a method of three-dimensional flight control that no one, for centuries, had envisioned. They made product.

"TROLL ISSUES" preceded the Wright Brothers. Whatever they were, not pioneer trolls. The case of George Selden preceded the Wright litigation. Selden had an idea for an automobile, which he did not embody at the time of his application, and for which he did not try to sell product. Henry Ford was a "victim" of the Selden patent, and initially not favorably disposed to the Wrights, but Ford changed his mind about the Wrights.

Shulman does not appreciate that the Wrights' invention was directed to three-dimensional control, and argues that the underlying principle of wing-warping was well-known for as many as fifty years before the Wrights. (p. 45).

Although Shulman talks about how Wrights' lawyers "write" in the patent [p. 46], the patent application of the Wrights (filed months before Dec. 1903) was written by the Wrights, not lawyers. The Wrights did not contact a lawyer until AFTER Dec. 1903, when THE WRIGHTS were threatened by a patent interference by the later-partner of Glenn Curtiss (Augustus Herring, a fact not discussed by Shulman).

The TIME author, Sean Trainor, although having a Ph.D. in History & Women’s Studies from Penn State University, misses this critical fact about the patent assertions AGAINST the Wrights. Among other things, he also omits the use of the re-constructed Langley Aerodrome, to fraudulently challenge the Wright patent.

In the text -- Distressed by this state of affairs, an up-and-coming politician named Franklin Delano Roosevelt, then serving as Assistant Secretary of the Navy, decided to take action. Strong-arming key players throughout the American aeronautic industry, Roosevelt convinced intellectual property holders to form a patent pool that would allow airplane makers to use one another’s technologies for a modest fee. --, Trainor wrongly implies that the licensing fee was "modest." In fact, it eliminated all the small competitors.

****
Text from TIME:

In waging this battle, the Wrights proved themselves more than pioneers in aviation. They also proved themselves pioneers of what’s sometimes known as patent trolling: the controversial modern practice of suing competitors for infringements that fall beyond the scope of one’s patent. Their legacy, therefore, is one of litigiousness and obstruction, as well as brilliance and innovation. Advancing aeronautics by leaps and bounds in the first years of the 20th century, Orville and Wilbur Wright squandered their talents and energies – and those of their most gifted rivals – in a period of legal wrangling between 1909 and 1917. American aviation would suffer immeasurably as a result, and the Wrights would establish dangerous precedents for subsequent generations of would-be patent trolls.

link: http://time.com/4143574/wright-brothers-patent-trolling/

**As to "what" a troll is, a May 2015 post in Forbes defined a troll in terms of not producing product.

See http://www.forbes.com/sites/econostats/2015/05/29/who-are-patent-trolls-and-what-will-h-r-9-do-about-them/

**As to the AIA and "inter partes review," the procedures therein address validity/invalidity of claims and do not addressinfringement issues relating to overbroad assertions of claim scope. Note for example:

For more on the motivations behind passage of the AIA, particularly the modification to administrative review, see, for example, Protecting Small Businesses and Promoting Innovation by Limiting Patent Troll Abuse, Hearing on S 23 before the US Senate Judiciary Committee, 113th Cong, 1st Sess *3–6, 8 (2013) (“2013 Patent Troll Abuse Hearing”) (testimony of Q. Todd Dickinson, Executive Director of the American Intellectual Property Law Association), online at http://ipwatchdog.com/blog/dickinson-senate-testimony-12-17-2013.pdf (visited Oct 25, 2014) (recounting the debate leading up to the AIA and referring to “the assertion of allegedly invalid or overbroad patents” as “the very abuse for which AIA post-grant procedures were created”). (from 81 U Chi L Rev Dialogue 93)

To illustrate the point, the Selden patent was never found invalid (and likely might have survived inter partes review), but it was found not infringed by Henry Ford, Ford dealers, and Ford buyers.

Thursday, December 17, 2015

When determining a claim’s patentability, the Board
must read the claim as a whole, considering each and
every claim limitation. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983). However, we have long held that if a
limitation claims (a) printed matter that (b) is not functionally
or structurally related to the physical substrate
holding the printed matter, it does not lend any patentable
weight to the patentability analysis. Id. at 1384–85.
In performing this analysis we do not strike out the
printed matter and analyze a “new” claim, but simply do
not give the printed matter any patentable weight: it may
not be a basis for distinguishing prior art. As we opined
in In re Gulack:

Where the printed matter is not functionally related
to the substrate, the printed matter will not
distinguish the invention from the prior art in
terms of patentability. Although the printed matter
must be considered, in that situation it may
not be entitled to patentable weight.
Id. at 1385 (footnote omitted).

**In passing, from Ex parte Gilmour:

The Board affirmed the obviousness rejection by finding that the limitation at issue was not to be given patentable weight. First, the Board noted that the limitation appeared to be intended use, as it "added no structure to the claim nor functionally changes the 'at least one set of text' that it modifies."

Furthermore, according to the Board, "authored not for any purpose related to creating or accessing a profile" was a mental step and as such, it was not entitled to patentable weight. Although the mental steps doctrine is typically used to analyze for compliance with 101, the Board found it also appropriate in assessing patentable weight

Because substantial evidence supports the Board’s
factual findings, except on the evidence of licensing, and
because we agree with the ultimate conclusion of obviousness,
we affirm the Board’s finding that claims 37, 94–97,
99–100, and 110–111 of the ’915 patent; claim 32 of the
’381 patent; and claim 15 of the ’778 patent are invalid
under 35 U.S.C. § 103.

Judge Newman re-iterated her assertions made in
the companion Merck case:

For the reasons I discussed in Gnosis I, these references
do not fill the gap between the folate compounds
described by Marazza and the uses described by Serfontein,
such that a person of ordinary skill in this field
would have been motivated to combine these references to
treat elevated homocysteine with a reasonable expectation
of success. Ueland provides a description of folate
and homocysteine biochemistry, and shows the biochemical
relationship between homocysteine and L-5-MTHF.
Ueland adds to the scientific investigations that have
been conducted, but Ueland does not suggest that L-5-
MTHF would successfully treat the specified diseases and
overcome the known uncertainties of stability, metabolism,
and bioavailability. Ueland does not suggest that
there would be a likelihood of success in using L-5-MTHF
compositions for the specific purposes discovered and
developed by the South Alabama scientists. The scientific
acclaim and licensing and copying that followed their
work add to the evidence of unobviousness. The PTAB
erred in evaluating and weighing this evidence.
For the reasons discussed in my dissenting opinion in
Gnosis I, obviousness was not established by a preponderance
of the evidence. From my colleagues’ contrary
ruling, I respectfully dissent.

The CAFC finds that negating "teaching away" arguments can amount to
a showing of "reasonable expectation of success":

In a final challenge to the Board’s decision, Merck
complains that the Board never made an express finding
that a person of ordinary skill would have a reasonable
expectation of success in combining Serfontein and
Marazza, or in further combining Serfontein, Marazza,
and Ubbink. Under KSR International Co. v. Teleflex
Inc., 550 U.S. 398, 418, (2007), a factfinder’s analysis of a
reason to combine known elements in the art “should be
made explicit.” But KSR does not require an explicit
statement of a reasonable expectation of success in every
case. Cf. id. at 419 (cautioning against confining the
obviousness analysis using formalistic rules). Here, the
Board addressed Merck’s arguments against a reasonable
expectation of success in the context of its teaching away
arguments. By rejecting Merck’s argument that the prior
art taught away from combining Serfontein, Marazza, and
Ubbink, the Board impliedly found a reasonable expectation
of success. We decline to overturn the Board’s decision
for failure to state expressly that a person of ordinary
skill would have had a reasonable expectation of success.

One asks, is a negation of an argument that prior art "taught away" the same thing
as saying the prior art suggested a "reasonable expectation of success"?

Is negating a thought that something is bad the same as saying that the thing is
good?

Judge Newman dissented in the case.

Her dissent began with a review of the AIA, including the text

It was believed that the PTO was granting patents too
easily, and that the courts were not consistently deciding
patentability issues. To attempt to remedy these deficiencies,
the America Invents Act created a new adjudicative
tribunal (the Patent Trial and Appeal Board or
PTAB) within the Patent and Trademark Office, and
established new procedures including changes in the
burdens of proof, limiting the path of judicial review, and
providing for finality and strict time limits. The purpose
is to restore an effective and balanced system of patents,
whereby valid patents may reliably be confirmed and
invalid patents efficiently invalidated.

An issue was the majority's use of the substantial
evidence standard:

Thus it is incorrect for this court, as the only reviewing
tribunal, to review the PTAB decision under the
highly deferential “substantial evidence” standard. Our
obligation is to assure that the legislative purpose is met,
through application of the statute in accordance with its
purpose. See Calvert Cliffs’ Coordinating Comm., Inc. v.
U. S. Atomic Energy Comm’n, 449 F.2d 1109, 1111 (D.C.
Cir. 1971) (“Our duty, in short, is to see that important
legislative purposes, heralded in the halls of Congress, are
not lost or misdirected in the vast hallways of the federal
bureaucracy.”). This court’s resort to deferential “substantial
evidence” review is at odds with the benefits that
Congress intended.

Judge Newman addresses the reasonable likelihood of success issue:

Marazza does not teach that L-5-MTHF is suitable to
treat elevated homocysteine, but only that it is an “active”
folate for treating folate deficiency. Amid the uncertain
predictability of biological response, this background does
not provide a reasonable likelihood of successful treatment
with any selected stereoisomer. Only hindsight
provides such prophesy.
The evidence of record does not support the PTAB’s
apparent assumption that any folate would be effective
against elevated homocysteine. No reference teaches that
L-5-MTHF has this activity. A prima facie case cannot be
based on the inventor’s successful investigations.

(...)

My colleagues find that “the PTAB impliedly found a
reasonable expectation of success,” observing that the
PTAB did not accept Merck’s argument that the references
“taught away” from Merck’s use. It is undisputed
that no reference taught Merck’s use. There was evidence
of instability and failures using the L-5-MTHF isomer in
folate treatments. No reference contains a suggestion to
use L-5-MTHF or expectation of success. Even Marazza
states only that there was “an increasing interest” in L-5-
MTHF. ’611 Patent, col.1, l.25.
The Court in KSR International Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007), in discussing the “obvious to try”
standard of obviousness, cautioned that something would
be “obvious to try” if “there are a finite number of identified,
predictable solutions” with “anticipated success.”
“The obviousness inquiry entails consideration of whether
a person of ordinary skill in the art ‘would have been
motivated to combine the teachings of the prior art references
to achieve the claimed invention, and . . . would
have had a reasonable expectation of success in doing so.’”
Insite Vision Inc. v. Sandoz, Inc., 783 F.3d 853, 859 (Fed.
Cir. 2015) (quoting Procter & Gamble Co. v. Teva Pharms.
USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009)) (elisions in
original). Here, the purported “reasonable expectation of
success” came from the hindsight knowledge of these
inventors’ success.

(...)

In contrast, Gnosis provided references suggesting
that lower concentrations of reduced folates could produce
the same intracellular concentrations as folic acid. PTAB
Op. at 20-21. Whether or not these inconsistent teachings
are viewed as “teaching away” they do not teach toward a
reasonable likelihood of success. The panel majority errs
in law, in stating that “the PTAB impliedly found a reasonable
expectation of success” based on the PTAB’s
finding of no “teaching away.” Such “implication” resides
only in the backward-looking eye of the beholder.

Newman notes:

The panel majority acknowledges that “although another
factfinder may have reasonably evaluated Merck’s
evidence of objective indicia of non-obviousness differently
in the first instance, the Board’s conclusion . . . is supported
by substantial evidence.” Maj. Op. at 17. This is
another illustration of the flaw in this court’s using the
substantial evidence standard, for the question before us
is whether the preponderance of the evidence supports the
PTAB’s decision.

Tuesday, December 15, 2015

Openwave, Unwired Planet lose appeal to the CAFC against Apple

Among other reasons, the case is of interest because of the reliance of the CAFC
on text in the "background" section:

The import of this section of the specification could not be
clearer: the perceived problem with the prior art “intelligent
devices” was the attempt to combine mobile devices
with computer modules, resulting in a device that was too
expensive, too bulky, too inflexible, and, therefore, commercially
infeasible.

This section similarly makes clear that any solution to
this problem requires movement away from the prior art’s
attempt to combine a computer module with a mobile
device:
Up to now, intelligent communication devices
have combined a computing module with a wireless
communications module. However, to gain
widespread acceptance, a two-way data communication
device with processing capability and the
ability to run a wide variety of differing user applications
is needed. In addition, such a device
should be comparable in size, cost, and weight to a
cellular telephone.
Id. at col. 3 ll. 29–35. The Summary of the Invention
begins by continuing along these lines, distinguishing the
invention of the patents-in-suit from the prior art devices
that include computer modules

The conclusion of the case:

For the foregoing reasons, and because we find that
Unwired Planet’s remaining arguments are without
merit, we conclude that the district court properly construed
the claim terms at issue and properly entered
judgment of non-infringement. Accordingly, the district
court’s judgment is affirmed

Sightsound v. Apple: CAFC can review PTO on whether patents are CBM

From the precedential decision:

SightSound Technologies, LLC (“SightSound”) is the
owner of U.S. Patent No. 5,191,573 (the “’573 patent”) and
5,966,440 (the “’440 patent”). Apple Inc. (“Apple”) petitioned
the United States Patent and Trademark Office
(“PTO”) for covered business method (“CBM”) review of
claims 1, 2, 4, and 5 of the ’573 patent and claims 1, 64,
and 95 of the ’440 patent. The PTO granted Apple’s
petition and instituted CBM review. The Patent Trial
and Appeal Board (“the Board”) issued a final decision
finding all the challenged claims would have been obvious.
SightSound appealed.

We hold that we lack jurisdiction to review the PTO’s
decision to consider issues not explicitly raised in the
petitions. We do, however, have jurisdiction to review
whether the patents qualify as CBM patents. We affirm
the Board’s determination that the ’573 and ’440 patents
qualify as CBM patents. Finally, we affirm the Board’s
final decision with respect to claim construction and
obviousness.

Can a work of authorship which is copyrighted be a trade secret?

As they prepare to argue the $10.7 million suit, attorneys for Edwin Burl Mays Jr. have asked the county for “Oregon Jail Standards, Policies and Criteria that were used in inspections of the Deschutes County Adult Jail between 2010 and 2015,” court records show. Mays’ son, Edwin Mays III, died of a methamphetamine overdose in the jail nearly a year ago.

Those standards might shed some light on the best practices the sheriff’s office aspired to at the time of Mays’ death, which is under investigation by the Oregon Department of Justice. His father’s attorneys have argued that Mays asked for medical help; the jail’s video of the night Mays died, released to The Bulletin in March, shows him behaving erratically while deputies mock him.

Though Mays’ attorneys can have the so-called Oregon Jail Standards, they remain sealed because they’re the property of the nonprofit Oregon State Sheriffs’ Association. The association says the standards are proprietary content. The standards, which are voluntary, are distinct from state and federal laws and are used in biannual inspections of county jails.

The standards can be released to Mays’ attorneys under a protective order, U.S. District Judge Ann Aiken determined Nov. 24. A protective order means in this case the standards are sealed and can only be shown to a select group of people directly or indirectly involved in the lawsuit — such as experts and court recorders .

Aiken’s Nov. 24 order also states any “documents, testimony, written responses or other materials” in the case that contain information the sheriffs’ association reasonably believes is confidential can be designated as such.

Although the standards are applied in the inspection of public facilities, the association argues they are a “trade secret” under Oregon law because the association owns them. John Bishop, the association’s executive director and the retired sheriff of Curry County, in an email Wednesday compared the standards to “the formula for Coca Cola or the recipe for KFC.”

One has the text

“Making the standards public would destroy their value,” Bishop wrote.

BUT note

Online U.S. Copyright Office records show the association registered a copyright for the first edition of the Oregon Jail Standards in 1999; the most recent registry is for the fifth edition of the standards in 2012. A representative of the Portland office of the law firm that handled the most recent registration, Lane Powell PC, could not be reached for comment.

Generally, the public is prohibited from duplicating material that’s under a copyright, according to University of Oregon law Professor Emeritus Dominick Vetri, but that doesn’t necessarily bar the public from knowing what the work contains.

A request to view the standards, submitted Thursday to the Library of Congress, was not responded to. Not all works registered with the Copyright Office are kept at the Library of Congress, and not all are published. If a work is published, the library determines whether it will maintain a copy for public viewing.

From the Duke Law Journal in 1981:

to enforce rights under copyright, copies of the trade secret must be deposited at the
Copyright Office. This requirement amounts to public disclosure of the secret, eliminates trade secret protection, and once again strips protection away from confidential ideas.

More on this later.

**As a footnote, as of 10:48am eastern on Dec. 15, patentlyo seems to be "not responding."

Monday, December 14, 2015

Another depressing year for patent law?

This was another depressing year for patent law, which long ago lost sight of its constitutional moorings as a balanced and limited source of incentives for innovators. Though Congress, the courts and the Patent and Trademark Office each tried in their own way to rein in a system widely-regarded as out of control, in the end nobody made much progress.

As to the text

On just one day in November, for example, over 200 new patent lawsuits were filed, as plaintiffs rushed to beat a change in federal procedure that could require more specific claims. Most were from companies that buy up patents of dubious quality and use them to extract nuisance settlements from actual innovators.

the filings were done in anticipation of the demise of "Form 18" from the removal of the "appendix of forms" in which form 18 resided.

There is mention of

The mismatch between expanding patent coverage and the quickening pace of disruptive change has become one of the greatest sources of danger to the innovation economy.

but the evidence seems to reside in the issuance of four bad patents, rather than in a more thorough analysis.

Sunday, December 13, 2015

"The Good Wife" on 13 December 2015 does KSR

Buried in the periphery of "The Good Wife" episode of December 13, 2015 were oblique allusions to patent law, beginning with
the episode title "KSR," which in the episode relates to kidnap, sedate, and rape, rather than the Supreme Court case on obviousness.

There is mention of the Dipple case, which seems to relate to patents, and there is mention of using "Form 18."

From celebritydirtylaundry :

Ethan shows up at Diane’s office – they are supposed to be filing Dipple’s case today. Diane, Howard, an David are arguing with Cary. Cary says that it is their fault that the interns walked, because they treated them horribly. Diane hisses at Cary that this is his fault….he is the one that started a generational battle at the firm and he needs to fix it ASAP. She rushes in to her office to try and stall Ethan.

The trick with the Dipple case turns on disciplinary rules:

Cary shows back up to the office with the team of interns – he brings them in to the office and tells them all about the Dipple case and what they need to do for the brief, and then he tells them tht they are all fired. The interns are confused, what was the point of all of that? Cary laughs that now that they heard their side of the Dipple case – they can’t work for Canning, and they just screwed themselves out of a job.

Importantly for patent cases, the removal of the Appendix of Forms means that patent holders may no longer plead infringement with the bare-bones Form 18. In the 2007 decision in Bell Atlantic Corp. v. Twombly, the Supreme Court raised the pleading standard in civil cases to require sufficiently detailed facts to show that a claim for relief is plausible on its face. The Federal Circuit, however, continued to allow patent infringement claims to be pled through Form 18, which requires little more than the names of the parties and the asserted patents. See K-Tech Telecommunications v. Time Warner, 714 F.3d 1277 (Fed. Cir. 2013). With the removal of Form 18, courts may hold parties claiming patent infringement to the higher Twomblypleading standard, making it more difficult for patent holders to bring claims.

**Relevant text from the KSR episode:

Oh, Monica, there you are. Appendix to the Federal Rules. I flagged Form 18. I still need the conforming examples... Not until you get me on the phone with the egghead from Chicago Polytech. I tracked down Professor Kennedy's secretary. She is waking him. Monica, is Form 18...? It's a template for simplified pleading. We don't need more than that.

CBS Sunday Morning on December 13, 2015

Charles Osgood introduced the stories for December 13, 2015. The cover story is by Rita Braver on Amy Cuddy, In Good Standing. Second, Tracy Smith on Will Smith. Third John Blackstone on Michael Lewis and The Big Short. Mo Rocca on the School of Rock. Tanita Neyer on kringles from Racine, Wisconsin. Headlines: Paris climate talks. Women voting in Saudi Arabia. Heisman goes to Derrick Henry of Alabama.

** Rita Braver on Amy Cuddy on body language. The relationship of posture to power.
Harvard Decision Science Laboratory. The book Presence. David Gergen now at Kennedy School of Government. You will notice it in the arena. John Wayne-like. I welcome challengesthat help us grow the science. Ph.D. in psychology from Princeton.
A tiny tweak that can make a huge difference. [The NY Times noted: A paper that she wrote in 2010 with the researchers Dana R. Carney and Andy J. Yap found that lab participants who spent two minutes in a room alone doing high-power poses (feet on the desk with fingers laced behind the head, let’s say) increased testosterone levels by about 20 percent and lowered the stress hormone cortisol by about 25 percent.]

**The Lancet says there is no link between happieness and a long life. Happiness has no effect on mortality. The study was only on Women.

John Blackstone offers a preview of The Big Short. The 2008 financial crisis. The 2010 book by Michael Lewis. A character in a situation. Risky mortgage bonds sold by big banks. Adam MacKay is the director (previous Anchorman; Talladega Nights). Anthony Bourdain. There is such an accidental quality to movies being made. Liar's Poker. Narratives about Wall Street.

Tracy Smith on Will Smith. Concussion. Bennet Omalu. The NFL owns a day of the week. Deliver the information. Six Degrees of Separation.
Being realistic is the commonly traveled road to mediocrity. Exterminate me professionally by asking that his paper be retracted.
Life can be wonderful if we choose to make it wonderful. Will Smith on walls and Muslims.

Martha Teichner on choir at New College, Oxford. Heavenly Voices. Choir founded in 1379. What is of the moment and what seems eternal. Edward Higginbotham. 16 boy choiristers. Only 4 new per year to replace the four who age out.

Opinion. Bill Flanagan. Big Lots tv ad. Commerce is our currency. Christmas is our biggest blowout. There is more to this world beyond what we see.

Moment of Nature. Topsail Hill Preserve,in South Walton, Florida.
[Topsail Hill Preserve State Park is located along 7525 W. Scenic Hwy 30A in Santa Rosa Beach. Topsail has plenty of campground and RV space for visitors looking to stay a while and enjoy the sights of the white sand beaches, hiking trails and fishing as well as enjoying three rare coastal dune lakes. ** South Walton, the portion of Walton County that sits south of the Choctawhatchee Bay and its tributaries, extends 26 miles, from Miramar Beach in the west to Inlet Beach in the east]

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.